Ex Parte Kii et al

Board of Patent Appeals and Interferences

Jul 29, 2008

10027194 (B.P.A.I. Jul. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANABU KII and TAKASHI KAWAKAMI
____________

Appeal 2008-0708
Application 10/027,194
Technology Center 2100
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Decided: July 29, 2008
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-10, 12-14, and 26, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2008-0708
Application 10/027,194

Claims 1 and 10 are illustrative.
1. A service offering system from a server to a terminal device,
comprising:

recording means for recording a unique identifier to each of a plurality
of package storage media issued;

a database for storing and managing the identifiers;

reading means for reading the recorded identifier from any of said
package storage media at said terminal device;

checking means for checking the identifier read by said reading means
against said identifiers managed in said database; and

service offering means for offering a service to said terminal device
corresponding to the package storage medium identified by the checked
identifier depending on a result of the check by said checking means.

10. A management server comprising:

receiving means for receiving right information that denotes services
available to a package storage medium and identifiers from said package
storage medium an issuing party that issues a plurality of storage media
identified by said identifiers which differ from one another;

storing means for storing right information corresponding to each of
the identifiers and said identifiers in a database; and

checking means for checking the identifier transmitted from a
terminal device by way of a service provider against said identifiers stored in
said storing means.

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Appeal 2008-0708
Application 10/027,194

The Examiner relies on the following references as evidence of
unpatentability.
Nusbickel US 6,119,133 Sep. 12, 2000
Moskowitz US 2002/0010684 A1 Jan. 24, 2002
Rice US 2002/0174010 A1 Nov. 21, 2002
Claims 1-10, 12-14, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nusbickel, Moskowitz, and Rice.
We reverse the rejection of claims 1 through 9 and 26 for the reasons
expressed by Appellants in the Appeal Brief in response to the rejection of
those claims. However, we sustain the rejection of claims 10 and 12 through
14.
Instant claim 10 recites receiving means for receiving data, storing
means for storing data, and checking means for checking data against other
data. The information content of the data is not entitled to patentable weight
in the analysis of patentability over the prior art.1 Appellants’ arguments
based on the information content of what is received, stored, and checked
rest on nonfunctional descriptive material. The content of nonfunctional
descriptive material is not entitled to weight in the patentability analysis. Cf.
In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim
merely the information content of a memory. . . . Nor does he seek to patent
the content of information resident in a database.”). See also Ex parte Nehls

1 Although claim 10 is in a “means plus function” format, the “means” are
embodied in a broadly described server. (See Br. 5, “Summary of Claimed
Subject Matter”; Spec. 19: 9 - 21: 21; Fig. 3.) The described corresponding
structure for the “means” is a general purpose server. The data manipulated
by the server does not change the underlying structure or function of any
processors or memory that make up the server.
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Appeal 2008-0708
Application 10/027,194

(BPAI Jan. 28, 2008), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf; Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 6, Sept. 2007).
Of the references applied against instant claim 10, at least Nusbickel
and Rice describe servers that receive, store, and check data, which is
sufficient to demonstrate unpatentability of the subject matter of claim 10.
Claims 12 through 14, not separately argued, fall with claim 10. See 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
The rejection of claims 1-10, 12-14, and 26 under 35 U.S.C. § 103(a)
as being unpatentable over Nusbickel, Moskowitz, and Rice is affirmed with
respect to claims 10 and 12-14, but reversed with respect to claims 1-9 and
26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

pgc

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